Opinions and Counseling

Understanding how your technology can be used to its full advantage within the business and legal frameworks is of the utmost importance in today’s competitive global marketplace. Oblon Spivak’s Opinions and Counseling group takes a fluid, cost-effective team approach, assigning the most highly qualified attorneys to specific projects. We work with our clients to develop their products and market them without running afoul of the competition. Additionally, the group counsels clients on risk management and litigation avoidance, assessing the possibilities of patent infringement when client products are launched or about to be launched. Our attorneys also collaborate with clients in extracting competitive advantages out of their intellectual property rights, for example by developing a patent portfolio that targets a new area of technology, thus placing legal barriers around that market to exclude competitors.

With a technically- and business-savvy team, we are able to advise clients on innovative strategies, business aspects, and the legal challenges they face, providing comprehensive advice needed to succeed in the highly competitive world market.

Our Services

Our team renders hundreds of patent opinions per year ranging from a single patent issue to long-term counseling on complex patent portfolio management and development concerns and litigation strategies. We routinely counsel our clients on:

  • Validity and enforceability
  • Infringement and misuse
  • Design-around issues
  • Licensing options
  • Bayh-Dole Act and government rights
  • International issues, including export controls and international/domestic filing opportunities and strategies

Our attorneys counsel clients through:

  • Early-stage development
  • Patent portfolio development
  • Prior art searches
  • Patent disputes
  • Reexaminations and reissues
  • Patent enforcement
  • Potential and ongoing litigation
  • Due diligence and patent portfolio analysis

We handle all types of technologies including cosmetics, semiconductors, circuits, nanotechnology, biotech, pharmaceuticals, aerospace, automotive, heavy machinery, high-tech plastics and glass.

The Opinions and Counseling group members are especially skilled at advising clients on the interplay of patents and business. We work closely with our clients’ inventors, technical staff, legal, marketing and business teams to identify potential risks and benefits, determine effective uses of innovations, and assure intellectual property portfolio optimization. Applying practical experience, legal expertise and technical know-how, we take an overall view of our clients’ business goals in order to devise methods to help them protect their intellectual property, optimize its value, and improve their market position. We evaluate global implications when giving advice, considering the differences in the U.S. and foreign legal systems so that they can be applied to our clients’ advantage.

Our Clients

Our attorneys regularly work with business leaders, marketing professionals, scientists and technicians at our clients’ companies. With an office in Tokyo, Japan, regular visits to domestic and foreign clients, and attorneys fluent in French, German and Japanese, our attorneys communicate effectively with clients around the world. We also host client trainees, familiarizing them with the U.S. legal system, culture and business methods.

Friday, December 02, 2011

In an earlier post commenting on the Federal Circuit decision in Spectralytics, Inc. v. Cordis Corp., we observed that a willful infringer’s failure to obtain advice of counsel prior to litigation can...

Friday, September 23, 2011

In a memorandum opinion issued September 16, 2011, a district court rejected an accused infringer’s argument that summary judgment of no willful infringement should be granted in its favor on the basis of its reliance on an opinion of counsel that there was no infringement. In denying the motion, U.S. District Judge Leonard P. Stark observed...

Wednesday, July 27, 2011

The Western District of North Carolina issued an opinion on July 14, 2011 ordering the plaintiff, Precision Links Incorporated, to pay attorneys’ fees and litigation costs to the defendants, USA Products Group, Inc. and Home Depot U.S.A., Inc., in part due to the plaintiff’s failure to obtain a “reasonable, comprehensive, and competent”...

Tuesday, July 26, 2011

Both houses of Congress have passed their own versions of patent reform legislation (S.23 and H.R.

Wednesday, June 29, 2011

A Federal Circuit panel decision in Spectralytics v. Cordis held that the failure to obtain an exculpatory opinion of counsel before engaging in infringing activity may be considered in determining both the existence of willful infringement and whether to award enhanced damages.

Wednesday, June 08, 2011

On May 31, 2011, the Supreme Court issued its opinion in Global-Tech Appliances, Inc. v. SEB S.A.  The opinion was focused on the proper legal standard for the intent element of induced infringement under 35 U.S.C. § 271(b). 

Relevant Facts

Tuesday, March 01, 2011

On February 23, 2011, the Supreme Court heard oral argument from the parties in Global-Tech Appliances, Inc. v. SEB S.A.  The argument focused on the proper legal standard for the intent element of induced infringement under 35 U.S.C. § 271(b).